June 26, 2019Client Alert

The U.S. Supreme Court’s Position on Registrability of ‘Immoral and Scandalous’ Trademarks

On June 24, the United States Supreme Court in a 6-3 decision struck down a law prohibiting the registration of “immoral” or “scandalous” trademarks.  The Court ruled that a clothing brand could register the trademark FUCT, finding that the law’s prohibition on the registration of such trademarks violates the First Amendment.  Iancu v. Brunetti, Case No. 18-302 (June 24, 2019).

Although a federal registration is not required for a party to have trademark rights, registration confers certain benefits, such as a nationwide trademark protection, a presumption that the mark is valid nationwide notice of mark ownership to third parties, and the availability of treble damages and attorney’s fees in certain situations.  These valuable benefits provide stronger protection to trademark owners than what is available at common law or under state trademark statutes.

The Trademark Act requires marks to meet certain standards to be registered.  Many of these requirements are viewpoint neutral.  For example, generic terms are not registerable and the question of genericness does not express a viewpoint.  Not all bars to registration, however, are viewpoint-neutral.  The Act also prohibited marks that carried offense.  These bars, such as the “disparagement” bar, banned marks that portrayed viewpoints considered societally inappropriate.

Brunetti is the second recent Supreme Court case challenging such restrictions on registration.  In 2017, the Court struck down one of the viewpoint-based bars to registration – the restriction of “disparaging” marks – in Matal v. Tam, 582 U.S. ___ (2017).  Tam addressed the trademark application that an Asian-American dance rock band filed to register its band name, The Slants.  The Trademark Office rejected the application, noting that the proposed trademark was considered a racial slur and therefore disparaging.  On appeal the Supreme Court held that a trademark registration bar that is viewpoint-based is unconstitutional and that the bar on registering disparaging marks was such a bar.  Consequently, Mr. Tam’s band was permitted to register their name.

Like Tam, Brunetti turns on the distinction between viewpoint-neutral and viewpoint-based registration bars.  The Court states that under the First Amendment “[t]he government may not discriminate against speech based on the ideas or opinions it conveys.”  Brunetti, Case No. 18-302 at page 4.  In finding that the “immoral or scandalous” bar was viewpoint-based and thus unconstitutional, the Court considered the plain language of the statute.  This language was found to “distinguish[] between two opposed sets of ideas: those aligned with conventional moral standards and those hostile to them.”  Id. at 6.  When viewing the statute’s application, the Court noted the Trademark Office’s pattern of rejecting marks whose viewpoints were conventionally considered negative, while approving marks carrying the opposite messages.  Given these facts, the “immoral or scandalous” bar was viewpoint-based and, therefore, violated the First Amendment’s guarantee of free speech.

It remains to be seen whether Congress will amend the Lanham Act in an effort to more narrowly tailor the restrictions to registrations struck down by the Supreme Court.  The concurrence and dissents in Brunetti suggest that a bar on the registration of marks that are obscene, vulgar, or profane may still be constitutionally permissible.

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